Monday, October 08, 2012

Seeking a second bite of the cheesesteak, Campo's Deli has filed a complaint (here) in the United States District Court for the Eastern District of Pennsylvania, for review under 15 U.S.C. Section 1071(b) of the TTAB's decision [TTABloggedhere] affirming two refusals of the mark PHILADELPHIA'S CHEESESTEAK for "sandwiches; sandwiches, namely, cheesesteaks" [CHEESESTEAK disclaimed]. The Board agreed with the PTO that the mark is (1) confusingly similar to the registered marks PHILADELPHIA CHEESESTEAK CO. & Design, PHILADELPHIA CHEESESTEAK CO., and THE ORIGINAL PHILADELPHIA CHEESESTEAK CO. for "prepared foods, namely, meat," and (2) primarily geographically descriptive under Section 2(e)(2).

Campo's asserts (in paragraph 24) that there is no likelihood of confusion with the cited marks because those three marks are "for a company which produces wholesale sliced meat. They have different products, different consumers, and entirely different avenues of commerce."

As to the geographical descriptiveness refusal, Campo's asserts that its mark is "descriptive of the unique and tremendously delicious goods it offers for sale to the famished masses, and is not, by contrast, an indication of the origin of the sandwich, which would otherwise prohibit registration." (para. 17). "[T]he purchasing public will know that Plaintiff provides a particular kind of Philadelphia Cheesesteak, of such a tremendous quality, such a gustatory delight, and such a propensity for myocardial infarction that it could only be called 'Philadelphia's Cheesesteak - the very best example of what is otherwise a very common sandwich." (para. 18).